Losing a trademark

…Now, imagine a situation where a trademark loses distinctiveness.…In many cases, in the history of America, there have…been product names that have once been a brand name.…And because they were so widely used by consumers to describe the…product, no matter what the product source was, that it became generic.…It lost its distinctiveness.…We actually have a name for it, it's called genericide.…So you could lose trademark rights if your…product is wildly successful, so successful that people…stop referring to you as the source and…refer to your product name for all of those.…

If anyone's ever used an adjustable wrench.…As a child, I grew up calling this the Crescent wrench.…Well, that's what the generic name for an adjustable wrench…is now but once upon a time, that was a brand.…It was called the Crescent wrench because Crescent was the source of the goods.…That company lost its distinction because…the consumer stopped identifying adjustable wrenches from…Crescent as the brand, and referred to all adjustable wrenches as Crescent wrenches.…

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Released

4/7/2014

How are you protecting your work? Author and attorney Dana Robinson gives you a high-level overview of intellectual property (IP), including topics such as patents, trademarks, and other protections. Learn the answer to common IP questions and discover an attorney's perspective on how you can best safeguard your ideas, and avoid infringing others' rights.

The information in this course applies only to the United States.

Lynda.com is a PMI Registered Education Provider. This course qualifies for professional development units (PDUs). To view the activity and PDU details for this course, click here.The PMI Registered Education Provider logo is a registered mark of the Project Management Institute, Inc.

DISCLAIMER: This course is taught by an attorney and addresses US law concepts that may not apply in all countries. Neither LInkedIn nor the attorney teaching the course represents you and they are not giving legal advice. The information conveyed through this course is akin to a college or law school course; it is not intended to give legal advice, but instead to communicate basic information to help viewers understand the basics of intellectual property.

Topics include:

What is intellectual property?

What is a copyright?

How long do copyrights last?

Trademarking your brand

Trademark infringement

Patenting your ideas

Defending trade secrets<br><br>

The PMI Registered Education Provider logo is a registered mark of the Project Management Institute, Inc.

Skill Level Appropriate for all

1h 31m

Duration

550,055

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Q: Can a provisional be extended?

A: No. The provisional is only good for one
year and it must be followed by a nonprovisional application by the
end of that 12 months, or it will not only mean you can't get protection
for the idea, but that others will be free to practice it after that. A
provisional that is not followed by a nonprovisional effectively makes
the subject of the provisional public domain.

Q: If the full utility is "held up" in the
patent office and is not secured before the provisional expires, does
that make your idea unpatentable?

A: See the "Can a provisional be extended?" FAQ. If you file a
provisional and then do not file a nonprovisional within a year (what is
called a full-utility patent application) then you are done. There is no
protection.

Q: The course mentions that discussing an idea with someone without a
signed NDA "starts the 12-month clock" on making your idea public
domain. Is this true?

A: If you have not filed any patent
application at all, and you disclose your idea without an NDA (say you
show it at a trade show or put it on a website), then you must file a
patent within 12 months of that disclosure. The reason is that the
patent must be novel, meaning there's no prior art out there that speaks
to your invention. If you disclose something prior to filing, then
your own disclosure makes your later patent NON-novel. You
ruin novelty by disclosing the idea. However, the US gives you a safe
harbor of 12 months from your disclosure to get your patent filed; so
your disclosure within 12 months is not considered a bar to novelty for
that period. But, after 12 months, the disclosure by you (or anyone) of
the subject matter will become a bar to your patent insofar as it makes
the patent not novel.

Q: Does disclosure make an idea unpatentable?

A: A disclosure more than 12 months prior
(or provisional past 12 months) will present a major obstacle to
patentability because it becomes prior art. It must be disclosed
in the patent application, and to the extent that what was disclosed is
the same as what you want to patent, it will likely be an obstacle. In
some cases, you can add new inventive features to something that was in
an expired provisional patent, or to something that was disclosed ... as
long as what is new is novel and is not obvious in light of the prior
disclosure or prior expired provisional patent.

A: Could your utility patent be revoked even
if the people you discussed your idea with kept it confidential? (In
other words, is an idea you talked about 12+ months ago unpatentable
because you talked about it?)

A: Generally, if the subject has not
disclosed, then it is arguably still protectable and patentable. You
don't have have a signed nondisclosure, but a knowledge of the
confidentiality and an obligation to keep it confidential. If you gave
an open talk at a trade show about it, and it happens that no one talked
about it, you still have a disclosure problem. If you told your friend
about it and she hasn't told anyone, then it is probably still
confidential and not disclosed.